- Daifuku Co., Ltd. / Daifuku America Corp. v. Murata Machinery, Ltd.No claims unpatentablePTAB · May 3, 2016 · IPR2015-00088 · APJ Ken B Barrett · IPR · Final written decision
Claims 1, 2, 5, 11–16, 19, 20, and 25–36 were not shown unpatentable as obvious over JPAP ’213 and JPAP ’237 because Petitioner failed to establish a reasoned motivation to combine.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see also In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278–79 (Fed. Cir. 2015), cert. granted sub nom. Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 890 (2016). Under the broadest reasonable construction standard, claim terms are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). No issue in this Decision requires explicit construction of any claim term. Accordingly, for purposes of this Decision, we do not provide explicit construction for any claim terms.” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“3 Although the parties argue for certain differences in the level of skill in the art, the differences are not material to our decision. Therefore, we apply Petitioner’s proffered skill level of one having at least an undergraduate degree in industrial or systems engineering and 3–5 years of experience designing systems and processes using automated material handling systems. Pet. 11 (citing Ex. 1028 ¶ 38); PO Resp. 8–9 (citing Ex. 2013 ¶ 15).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“paragraph 7 as providing the motivation for one of ordinary skill in the art to add the lateral transfer device from the conveyance truck of JPAP ’237 to moving body 3 in JPAP ’213 Figure 1. Dr. Sturges, moreover, does not provide a reasoned analysis based on the disclosures and embodiments of JPAP ’213 and JPAP ’237, in the context of the knowledge and skill level of a degreed engineer with 3–5 years of experience developing automated material handling systems. Dr. Sturges does not explain why and how one of ordinary skill would have selected the lateral transfer device from the conveyance truck of JPAP ’237 for use with moving body 3 in JPAP ’213 Figure 1. Ex. 1028 ¶¶ 222–226. For example, there is no explanation of why one of ordinary skill would use the lateral transfer device from JPAP ’237, given that mechanically moveable storage tables already are used to effect lateral transfer of articles B on both sides of moving body 3 in JPAP ’213 Figure 1. See id. Even if the proposed modification were to be made, Dr. Sturges does not account for counterweight 51 in JPAP ’237, which extends laterally to the opposite side of extendable arm 42, or explain why the counterweight would not interfere with the articles and storage tables located on the opposite side of moving body 3 in JPAP ’213 Figure 1. Id.; Mot. Observ. 2–3 (quoting Ex. 2039, 70:22–71:15 (“Q. [Y]ou did not provide any testimony that the hoist vehicle of the JPAP ’213 reference can utilize the robotic arm on one side while maintaining the swinging shelves on the other side; correct? A. That’s correct.”)). To the extent Petitioner argues that Dr. Sturges has provided evidence on this point (Tr. 83:9–13), such evidence has not been cited in the Petition or the Reply, nor have we located such evidence. Pet. 36–49 (citing Ex. 1028 ¶¶ 218–272); Reply 11– 12 (citing Ex. 1028 ¶¶ 222–26); Mot. Observ., 1–2 (quoting Ex. 2039, 71:23–72:9 (“Q. [Y]ou did not address whether it would have been necessary to change the functional relationship between the swinging shelf and the hoist vehicle of the JPAP ’213 reference; correct? A. That’s accurate.”)).7” slip op. at 21
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“We also credit the Declaration testimony of Dr. Bottoms and Patent Owner’s translator, Mr. Yazaki, and the deposition testimony of Petitioner’s translator, Mr. Chu. Mr. Chu testifies that JPAP ’213 paragraph 7 does not “say anything about the transfer means moving an article laterally.” Ex. 1035, 30:23–31:5. Mr. Yazaki’s Declaration states that paragraph 7 expresses only that “the transfer means is on the moving body side, as opposed to being on the article retaining unit side” of the conveyance system and “not [] that the transfer means is on a lateral surface of the moving body facing the article retaining unit.” Ex. 2019 ¶ 5. Dr. Bottoms testifies that a person of ordinary skill would have understood the translated phrase “on the side of the moving body” in paragraph 7 to refer to the transfer means (the hoist) being located on the moving body side of the system rather than the storage side of the system, not physically positioning the transfer means on the lateral side of moving body 3. Ex. 2013 ¶ 114. Dr. Bottoms also explains how JPAP ’213 distinguishes between vertical movement of the retaining unit transfer means and lateral movement of the article movement means MS. Id. ¶ 116 (citing Ex. 1005 ¶ 22). Dr. Sturges’ Declaration testimony, relied upon by Petitioner to rebut Patent Owner’s argument and evidence (Reply 8–9, citing Ex. 1028 ¶¶ 142–44), provides no analysis of paragraph 7, claim 4, or the relevant description in JPAP ’213. Rather, it mimics the error of the Petition in asserting that JPAP ’213 “teaches a system where the vehicle does the work of transferring the pods B laterally to and from the tables 11.” Ex. 1028 ¶ 142.5 Therefore, for the reasons given above, we find that JPAP ’213” slip op. at 14
Patent outcomesUS 7,165,927 not shown unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 7,165,927 - Daifuku Co., Ltd. / Daifuku America Corp. v. Murata Machinery, Ltd.No claims unpatentablePTAB · May 3, 2016 · IPR2015-00085 · APJ Brian P Murphy · IPR · Final written decision
Claims 6–11 and 14 were not shown unpatentable as obvious over JPAP 213 and JPAP 237 because the petitioner did not establish a reasoned motivation to combine.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“A conclusion of obviousness requires more than a mere showing that the prior art includes separate references covering each separate limitation in a claim under examination. Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011). Rather, obviousness requires the additional showing that a person of ordinary skill at the time of the invention would have selected and combined the prior art elements in the normal course of their work to yield the claimed invention. Id. We have rejected Petitioner’s interpretation of JPAP Paragraph 7 that underpins its motivation to combine argument and Dr. Sturges’ corresponding testimony. See Section II.B.3–4 above. Although Petitioner and Dr. Sturges do provide evidence of known alternatives for laterally transferring semiconductor cassette pods in overhead rail conveyance systems (Pet. 41 (citing Ex. 1028 ¶ 162)), their analysis of a reason or motivation to combine the systems in the manner claimed in the ’153 patent is lacking. The insufficiency of the evidence and analysis is particularly acute when the assertion that JPAP 213 paragraph 7 “expressly contemplates” such a combination is removed from the analysis. Petitioner’s remaining argument, that it would have been obvious for a person of ordinary skill to make the asserted modification because it was one of a “finite number of identified, predictable solutions” and “an arrangement of old elements . . . yielding no more than one would expect from such an arrangement,” is little more than a conclusory summary of KSR without the incumbent analysis based on the facts and evidence of the present case. Pet. 41–42 (citing Ex. 1028 ¶ 164); Reply 6–7, 11–13 (citing Ex. 1028 ¶¶ 162–165). For example, Petitioner argues that “any mechanical engineer would have understood that the number of moving mechanisms should always be reduced when possible” in support of its motivation to combine argument. Reply 11 (citing Ex. 1005 ¶ 7; Ex. 1028 ¶ 165). Petitioner’s cited evidence does not support the statement; rather it relies on an incorrect interpretation of JPAP 213 paragraph 7. Dr. Sturges also acknowledges in his deposition that paragraph 165 of his Declaration relies only on Petitioner’s incorrect interpretation of JPAP 213 paragraph 7. Ex. 1034, 165:9–17 (“Q. [L]ooking at paragraph 165, I don’t see any reference to anything besides paragraph 7 of the ’213 reference. Right? A. No. 165 doesn’t have any other cite.”). Neither Petitioner nor Dr. Sturges, moreover, provides a meaningful mechanical analysis or explanation beyond citing JPAP 213 paragraph 7 in support of Petitioner’s motivation to combine argument. In short, Petitioner’s conclusory paraphrasing of KSR is insufficient to satisfy its burden, particularly without the support of Petitioner’s interpretation of JPAP 213 paragraph 7. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”) (quoted with approval in KSR, 550 U.S. at 418). Therefore, for the reasons given above, we determine that Petitioner has not satisfied its burden of proving the asserted obviousness of claims 6–11 and 14 over JPAP 213 and JPAP 237 by a preponderance of the evidence.14” slip op. at 28
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“We also credit the Declaration testimony of Dr. Bottoms and Patent Owner’s translator, Mr. Yazaki, and the deposition testimony of Petitioner’s translator, Mr. Chu. Mr. Chu testifies that JPAP 213 paragraph 7 does not “say anything about the transfer means moving an article laterally.” Ex. 1035, 30:23–31:5. Mr. Yazaki’s Declaration states that paragraph 7 expresses only that “the transfer means is on the moving body side, as opposed to being on the article retaining unit side” of the conveyance system and “not . . . that the transfer means is on a lateral surface of the moving body facing the article retaining unit.” Ex. 2019 ¶ 5. Dr. Bottoms testifies that a person of ordinary skill would have understood the translated phrase “on the side of the moving body” in paragraph 7 to refer to the transfer means (the hoist) being located on the moving body side of the system rather than the storage side of the system, not physically positioning the transfer means on the lateral side of moving body 3. Ex. 2013 ¶ 114. Dr. Bottoms also explains how JPAP 213 distinguishes between vertical movement of the retaining unit transfer means and lateral movement of the article movement means MS. Id. ¶ 116 (citing Ex. 1005 ¶ 22). Contrary to Petitioner’s argument, Dr. Bottoms’ deposition testimony is not inconsistent with his declaration testimony clarifying the interpretation of JPAP 213 paragraph 7, as discussed above. Reply 9 (citing Ex. 1043, 109:7–14). His deposition testimony is consistent with the disclosure of the retaining unit transfer means as a vertical hoist, not a lateral transfer mechanism. Dr. Sturges’ Declaration testimony, relied upon by Petitioner to rebut Patent Owner’s argument and evidence (Reply 9), provides no analysis of paragraph 7, claim 4, or the relevant description in JPAP 213. Rather, it mimics the error of the Petition in asserting that JPAP 213 “already contemplates modifying the Fig. 1 system . . . to do the work of moving [articles] B to and from the overhead locations BS, 11.” Ex. 1028 ¶ 165.11 Therefore, for the reasons given above, we find that JPAP 213” slip op. at 19
- ExcludeMotion to exclude, deniedDenied
“14 In view of our determination, we need not consider Patent Owner’s objective evidence of nonobviousness. See Transocean Offshore Deepwater Drilling, Inc., v. Maersk Drilling USA, Inc., 699 F.3d 1340, 1349 (Fed. Cir. 2012) (“objective evidence of nonobviousness . . . may be sufficient to disprove or rebut a prima facie case of obviousness”). PO Resp. 30–45; Reply 17–24. of Exhibit 1038. Petitioner relies on Exhibit 1038 and paragraphs 3–4 of Exhibit 1040 to rebut Patent Owner’s argument that Petitioner copied Patent Owner’s invention claimed in the ’153 patent. Reply 18–19, 21, 23. Patent Owner seeks to exclude Exhibit 1038 and paragraphs 3–4 of Exhibit 1040 as irrelevant (Fed. R. Evid. 401, 402), inadmissible hearsay (Fed. R. Evid. 801(c)), and unauthenticated (Fed. R. Evid. 901). Mot. Excl. 2–8. We do not rely on or address Patent Owner’s asserted objective evidence of nonobviousness or Petitioner’s rebuttal evidence in our Decision. Therefore, Patent Owner’s motion to exclude Exhibits 1038 and paragraphs 3–4 of Exhibit 1040 is dismissed as moot.” slip op. at 30
- Skill levelSkill level petitioner adoptedDecided for petitioner
Patent outcomesUS 7,771,153 not shown unpatentable§ 103 obviousnesscites KSRPatents in suitUS 7,771,153 - Redline Detection, LLC v. Star Envirotech, Inc.No claims unpatentablePTAB · Jun 30, 2014 · IPR2013-00106 · APJ James B Arpin · IPR · Final written decision
Claims 9 and 10 were not shown unpatentable because the evidence did not establish a reason to combine the references to create the claimed inert environment.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Petitioner, however, does not cite precedent to support its position, and, during the oral hearing, Petitioner acknowledged that it was unaware of any supporting case law. Id. at 28:14-17. Moreover, we note that Dr. Checkel has “worked on automotive research projects with all of the ‘Big Three’ North American manufacturers as well as various suppliers to the industry.” Ex. 2018 ¶ 3. We are not persuaded on this record and with respect to this art that Petitioner has shown that a relevant distinction may be drawn between persons of ordinary skill in the United States and in Canada.” slip op. at 16
- Expert testimonyPatent owner expert creditedDecided for patent owner
“Based on the present record, including Dr. Checkel’s unrebutted testimony, we are not persuaded that Petitioner has provided sufficient evidence to show that a person of ordinary skill in the art would have had reason to substitute the air used in Gilliam with inert gas alone from the mixture disclosed in Stoyle to achieve the invention recited in claim 9. Specifically, Dr. Checkel opines that: 136. The Stoyle apparatus heater relies on a high pressure process to heat oil to a temperature so as to enable flash evaporation and thus generate a large output of smoke. The Stoyle apparatus heats and forces a foam of oil and inert carbon dioxide gas under pressure through narrow annular passages in a heated metal assembly. This construction allows the oil to be pressurized and superheated above its atmospheric boiling temperature without significant degradation because of the uniform heating temperature and lack of oxygen. At the end of Stoyle’s heater tube, the superheated liquid oil is released to ambient conditions to form a mist. 137. A smoke generator relying on high pressure and flash evaporation to generate large volumes of smoke would be inappropriate and dangerous to use with the closed volume of an EVAP system, which is typically restricted to pressure of 1 psi (7kPa) or less. Even if the smoke generator had some modifications, the use of high pressure in generating the smoke and the production of large volumes of smoke at a rapid rate would risk damaging EVAP and fuel system components, possibly to the point of rupture. A person of skill would not consider Stoyle to be an analogous reference to add features missing from Gilliam. Ex. 2018 ¶¶ 136-137 (emphasis added; citations omitted). Dr. Checkel’s analysis of the differences between Stoyle and claim 9 of the ’808 patent is specific, well-supported, and persuasive. Therefore, we do not find sufficient evidence to support Petitioner’s argument for relying on Stoyle’s ventilation testing apparatus, in combination with Gilliam’s vacuum system leak-testing apparatus, to make the asserted substitution. We determine that the evidence of record is not sufficient to conclude that Gilliam and Stoyle provide a reason for one skilled in the relevant art to create an inert environment within a closed smoke-producing chamber and, subsequently, within a closed EVAP system during leak testing. In view of the differences between Stoyle’s and Gilliam’s apparatus, as detailed by Dr. Checkel, we are persuaded that a person of ordinary skill in the relevant art would not have reason to choose only the inert gas from Stoyle’s air/inert gas mixture and substitute inert gas alone for Gilliam’s use of air to achieve the invention recited in claim 9.” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“iii. Combination of Gilliam and Stoyle For the reasons discussed below, we agree with Patent Owner, and we are not persuaded by Petitioner’s evidence or Petitioner’s reasoning that a person of ordinary skill would have had reason to substitute Stoyle’s use of inert gas, forced into the narrow compressed space between a bore and a plug, in place of the air used in Gilliam’s temperature-regulated, spark arrestor-governed system to generate smoke in a closed smoke-producing chamber. See Pet. 41-42. It is not sufficient for prior art references to teach or suggest the recited limitations of a claim. There must be some reasoning supported by rational underpinnings to combine the references to achieve the invention recited in the challenged claims. As the U.S. Supreme Court explained, “[a] factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.” KSR, 550 U.S. at 421 (citing Graham, 383 U.S. at 36 (warning against a “temptation to read into the prior art the teachings of the invention in issue” and instructing courts to “guard against slipping into use of hindsight”).” slip op. at 22
- ExcludeMotion to exclude, deniedMixed
“Exhibits 2020, 2022, and 2024-2036: Referenced in Dr. Checkel’s Declaration, and Exhibits 2008, 2013, 2015, and 2017: Referenced in Mr. Saffie’s Declaration Petitioner seeks to exclude Exhibits 2020, 2022, and 2024-2036, referenced in Dr. Checkel’s Declaration, and Exhibits 2008, 2013, 2015, and 2017, referenced in Mr. Saffie’s Declaration, as allegedly irrelevant under FRE 403 and hearsay under FRE 801 and 802. Pet. Mot. Excl. 15. Petitioner, however, fails to identify any allegedly improper portions of any of these exhibits with any particularity. Id.; see Pet. Reply Mot. Excl. 5 (“For the reasons set forth in [Petitioner’s] motion, the remainder of [Patent Owner’s] evidence should be excluded.”). Such a general objection to these exhibits does not provide us with the information necessary to assess Petitioner’s reasons for seeking exclusion of these exhibits. Therefore, on this record, Petitioner’s motion to exclude Exhibits 2008, 2013, 2015, 2017, 2020, 2022, and 2024-2036 is denied. V. CONCLUSION Petitioner has not presented sufficient evidence to show by a preponderance” slip op. at 38
Patent outcomesUS 6,526,808 not shown unpatentable§ 103 obviousnesscites KSRPatents in suitUS 6,526,808
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.